Even After Enfish, Alice Still Casts a Shadow at the PTAB
When it comes to Enfish, the PTAB may have just indicated that it prefers to cut bait. In Informatica Corp. v. Protegrity Corp., CBM2015-0021 (May 31, 2016), the PTAB held that U.S. Patent No 6,321,201 was void under Alice despite the Federal Circuit’s recent holding in Enfish v. Microsoft.
Although the Informatica patent, like that at issue in Enfish, pertained to databases[1], the PTAB held that the ‘201 database patent hewed too closely to “normal functions and … expected results” and thus was an abstract idea under part one of the Alice test. The patent was held to lack sufficient non-routine subject matter to take it out of the realm of pure abstraction and thus was invalidated under Alice step two. Addressing the ‘201 patent’s subject matter eligibility, the PTAB held that the patent’s independent claims were directed to “the abstract idea of determining whether access to data should be granted based on whether one or more rules are satisfied” and that its necessary relationship to the computer space was irrelevant as “[t]he databases and access rules recited in claims 1 and 8 perform their normal functions and achieve expected results.”
The PTAB offered the following relatively brief observation of the case’s relation to Enfish: “We are not persuaded, however, that the instant claims are directed to a specific improvement to the way computers operate.” (emphasis added).
Thus to preserve their claims, patent owners seemingly must show that their claimed invention is directed to a “specific improvement to the way computers operate.” But what exactly is “a specific improvement to the way computers operate” if database element retrieval does not meet this standard, but the logical database structure of Enfish does? Well, to the extent that Informatica is reconcilable with Enfish, it should be noted that Enfish provided a comparatively concrete recitation of a data structure, while the claims in Informatica pertained to database operations. Litigants seeking to analogize their software patents to Enfish at the PTAB would therefore be well-advised to emphasize any concrete, structure-like aspect of a claimed invention rather than relying on Enfish’s cautionary effect to significantly contract the scope of Alice.
Considering that both Informatica and Enfish pertained to database technology, and considering the significance of Enfish’s placement of a bound on Alice’s reach, the PTAB’s relatively brief discussion of and distinction of the Enfish decision is perhaps surprising. Informatica suggests that, in the first place, the PTAB does not regard Enfish as the seminal decision that other commentators and indeed even the PTO have hailed it as. Litigants are well-advised to specifically analyze and analogize their cases as closely as possible to Enfish and its claims rather than relying solely on the similarity of subject matter. Enfish at the PTAB will not automatically preserve even database-specifi0c claims from Alice part one—let alone of software patents at large.
An additional interesting issue in the Informatica decision concerns whether the ‘201 patent claimed a method relating to financial activity. The PTAB agreed with the petitioner in Informatica that although the claims were directed to database entry and processing, the ‘201 patent was appropriate for CBM review because the patent’s specification indicated that “banking is a field where protection against unauthorized access to databases that are used for administering and storing sensitive information is desired” and “[b]anking is a financial activity.” Thus, although the connection was arguably not direct, the ‘201 patent “encompasse[d] activities that are financial in nature, incidental to a financial activity, or complementary to a financial activity.” Presumably, the PTAB was primarily invoking databases as “complementary” to financial activity. It remains to be seen whether Informatica will support a more general holding that database access is always “complementary to” financial processes and therefore database access patents are categorically appropriate for CBM review. The PTAB rejected the patent owner’s arguments that previous (nonbinding) PTAB cases had not held databases subject to CBM review on the grounds that “the determination of whether the patent is a covered business method patent rests upon the specific facts of those proceedings.” Thus, the jurisdictional question of whether databases at large are CBM-eligible looks like it may be subject to case-by-case factual inquiry, with the PTAB looking at, for instance, whether the specification invokes finance or banking.
[1] The ‘201 Patent is directed to retrieving database elements and processing those elements in accordance with element-specific encryption standards.
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